Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Species II, Figures 8-9, in the reply filed on 9/8/2026 is acknowledged.
Claims 9-16 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species I and Species III-VI, there being no allowable generic or linking claim. Although Claims 9-10 were recommended as drawn to Species II in the Response to the Restriction Requirement filed on 9/8/2026, claims 9-10 are properly classified under nonelected Species VI. Claims 9 and 10 recite a compartment, which is exclusive to Species VI, Figures 20-21B. Therefore, at this time, Claims 9-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species VI.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
The present rejection(s) reference specific passages from cited prior art. However, Applicant is advised that the rejections are based on the entirety of each cited prior art. That is, each cited prior art reference “must be considered in its entirety”. (See MPEP 2141.02(VI)) Therefore, Applicant is advised to review all portions of the cited prior art if traversing a rejection based on the cited prior art.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Appl. Publ. No. 2014/0221750 A1 to Weitzner (“Weitzner”).
Regarding claim 1, Weitzner discloses a device for coupling an elongate member with a shaft of an endoscope (the endoscopic instrument 30 passing along side the endoscope 10 may be secured to external surface 25 of the endoscope 10 using one or more guides 36; Fig. 2, paragraph 0030), the device (guide 36; Figs. 2 and 5B, paragraph 0030) comprising:
a first contoured portion configured to mate with an outer surface of the shaft of the endoscope (one ring 105a may fit around the elongate section 15 of the endoscope 10; Fig. 4-5A, paragraph 0052); and
a second contoured portion configured to couple with the elongate member (another ring 125a may fit around the shaft 34 of the endoscopic instrument 30; Figs. 4-5A, paragraph 0052), and
wherein when the first contoured portion is mated with the outer surface of the shaft and the second contoured portion is coupled with the elongate member, the elongate member is secured relative to the shaft and is adjustable relative to the shaft (in addition to the guides 36 sliding on the external surface 25 (movement indicated by arrow 65), the endoscopic instrument 30 may also slide on the guides 36 (movement indicated by arrow 75); Fig. 3, paragraph 0043).
Regarding claim 2, Weitzner discloses the device according to claim 1. Weitzer further discloses wherein the second contoured portion is configured such that the elongate member is able to adjust rotationally and longitudinally relative to the shaft when the elongate member is coupled with the second contoured portion and the first contoured portion is mated with the outer surface of the shaft (the endoscopic instrument 30 may be rotated around the longitudinal axis 12 of the endoscope 10 to locate the end effector 32 at a suitable position; Fig. 3, paragraph 0061).
Regarding claim 3, Weitzner discloses the device according to claim 1. Weitzer further discloses wherein the second contoured portion is part of a coupling component configured to couple with the elongate member via a snap connection (embodiments of the ring 125a may also include hinge and lock mechanisms as in ring 105a. Some of these embodiments may also include a live hinge and/or other biasing means as in the case of ring 105a; Fig. 5A, paragraphs 0052-0053).
Regarding claim 4, Weitzner discloses the device according to claim 1. Weitzer further discloses wherein the first contoured portion is part of a coupling component configured to couple with the shaft via a snap connection (it is also contemplated that, in some embodiments, hinge 108a may include a living hinge or other biasing means so that the ring 105a may be normally closed. In these embodiments, the ring 105a may be held open to fit and snap shut around the endoscope 10; Fig. 5A, paragraph 0052).
Claims 1, 3-5, and 17-19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent Appl. Publ. No. 2023/0190080 A1 to O’Dea et al. (“O’Dea”).
Regarding claim 1, O’Dea discloses a device for coupling an elongate member with a shaft of an endoscope (a clip assembly (42) for securing a tubular member (5) to an endoscope (3) comprising a plurality of clips (40); Fig. 1, abstract), the device (the clips 7 and the tethering of clips 7 to form the clip assembly 10; Fig. 1, paragraph 0186) comprising:
a first contoured portion configured to mate with an outer surface of the shaft of the endoscope (each clip 7 comprises a body member 12 having a pair of spaced apart first side members 14 extending from a first part 15 of the body member 12 and defining therebetween an elongated first channel 17 for releasably engaging the endoscope 3; Figs. 2-3, paragraph 0187-0188); and
a second contoured portion configured to couple with the elongate member (the second side members 19 define therebetween a passageway, which in this embodiment of the invention comprises a second channel 21 for releasably engaging the tubular member 5; Figs. 2-3, paragraph 0187-0188), and
wherein when the first contoured portion is mated with the outer surface of the shaft and the second contoured portion is coupled with the elongate member, the elongate member is secured relative to the shaft and is adjustable relative to the shaft (the second channel 21 may be adapted to … slideably engage the tubular member 5, whereby the tubular member 5 would be longitudinally slideable in the second channel 21; Fig. 1, paragraph 0196).
Regarding claim 3, O’Dea discloses the device according to claim 1. O’Dea further discloses wherein the second contoured portion is part of a coupling component configured to couple with the elongate member via a snap connection (the resilience of the first and second side members 14 and 19 is such that the first and second side members 14 and 19 are urgeable outwardly in the direction of the arrows A and B, respectively, for accommodating the endoscope 3 and the tubular member 5 into the respective first and second channels 17 and 21 through the first and second open mouth 27 and 29 thereof; Fig. 8, paragraph 0191).
Regarding claim 4, O’Dea discloses the device according to claim 1. O’Dea further discloses wherein the first contoured portion is part of a coupling component configured to couple with the shaft via a snap connection (the resilience of the first and second side members 14 and 19 is such that the first and second side members 14 and 19 are urgeable outwardly in the direction of the arrows A and B, respectively, for accommodating the endoscope 3 and the tubular member 5 into the respective first and second channels 17 and 21 through the first and second open mouth 27 and 29 thereof; Fig. 8, paragraph 0191).
Regarding claim 5, O’Dea discloses the device according to claim 1. O’Dea further discloses wherein the first contoured portion and the second contoured portion are monolithic (the first and second side members 14 and 19 are integrally formed in one-piece with the body member 12 by injection molding from a resilient plastics material; Fig. 3, paragraph 0192).
Regarding claim 17, O’Dea discloses a method of coupling an elongate member to a shaft of an endoscope, the method comprising:
coupling a first coupling component to the shaft of the endoscope (each clip 7 comprises a body member 12 having a pair of spaced apart first side members 14 extending from a first part 15 of the body member 12 and defining therebetween an elongated first channel 17 for releasably engaging the endoscope 3; Figs. 2-3, paragraph 0187), wherein the elongate member is coupled to a second coupling component (the second side members 19 define therebetween a passageway, which in this embodiment of the invention comprises a second channel 21 for releasably engaging the tubular member 5; Figs. 2-3, paragraph 0187) and coupling the first coupling component to the shaft secures the elongate member relative to the shaft at an axial location between a first end of the shaft and a second end of the shaft (a clip assembly (42) for securing a tubular member (5) to an endoscope (3) comprising a plurality of clips (40); Fig. 1, abstract, paragraph 0186), and
wherein the elongate member is able to move longitudinally relative to the second coupling component when coupled with the second coupling component and the first coupling component is coupled with the shaft (the second channel 21 may be adapted to … slideably engage the tubular member 5, whereby the tubular member 5 would be longitudinally slideable in the second channel 21; Fig. 1, paragraph 0196).
Regarding claim 18, O’Dea discloses a method according to claim 17. O’Dea further discloses coupling the second coupling component with the elongate member, and wherein coupling the second coupling component with the elongate member includes snapping the elongate member into the second coupling component (the resilience of the first and second side members 14 and 19 is such that the first and second side members 14 and 19 are urgeable outwardly in the direction of the arrows A and B, respectively, for accommodating the endoscope 3 and the tubular member 5 into the respective first and second channels 17 and 21 through the first and second open mouth 27 and 29 thereof; Fig. 8, paragraph 0191 and 0196).
Regarding claim 19, O’Dea discloses a method according to claim 17. O’Dea further discloses wherein the first coupling component is a portion of a clip and the second coupling component is a portion of the clip (clip 7; Fig. 3, paragraph 0187).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over O’Dea in view of over U.S. Patent Appl. Publ. No. 2015/0257633 A1 to Hassidov et al. (“Hassidov”).
Regarding claim 6, O’Dea discloses the device according to claim 1. O’Dea further discloses a fixture defining the first contoured portion and the second contoured portion (the first and second side members 14 and 19 are integrally formed in one-piece with the body member 12 by injection molding from a resilient plastics material; Fig. 3, paragraph 0192). However, O’Dea does not explicitly disclose a band configured to engage the fixture and couple the fixture to the shaft of the endoscope.
Hassidov teaches a band configured to engage the fixture and couple the fixture to the shaft of the endoscope (tip adapter 13 is held in place by an attachment means 14 such as … a strap; Fig. 17A-B, paragraph 0210). Hameed teaches the use of a band as an endoscope attachment member helps to hold the fixture in place on the endoscope (paragraph 0210).
Hassidov is considered to be analogous to the claimed invention because it is in the same field of endoscopes with a secondary elongated device attached to the outer surface of the endoscope. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of O’Dea to incorporate the teachings of Hassidov by adding a band around the endoscope shaft. Doing so helps to hold the fixture in place on the endoscope, as recognized by Hassidov.
Regarding claim 7, O’Dea, as previously modified by Hassidov, discloses the device according to claims 1 and 6. Hassidov further discloses wherein the band is configured to extend around the shaft and an outer surface of the fixture (tip adapter 13 is held in place by an attachment means 14 such as … a strap; Fig. 17A-B, paragraph 0210), the outer surface of the fixture faces a direction that is facing away from a surface of the first contoured portion (the outer surface of the tip adapter 13 is facing away from a first contoured portion of the tip adapter 13; Fig. 17A).
Claims 6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over O’Dea in view of U.S. Patent Appl. Publ. No. 2014/0343358 A1 to Hameed et al. (“Hameed”).
Regarding claim 6, O’Dea discloses the device according to claim 1. O’Dea further discloses a fixture defining the first contoured portion and the second contoured portion (the first and second side members 14 and 19 are integrally formed in one-piece with the body member 12 by injection molding from a resilient plastics material; Fig. 3, paragraph 0192). However, O’Dea does not explicitly disclose a band configured to engage the fixture and couple the fixture to the shaft of the endoscope.
Hameed teaches a band configured to engage the fixture and couple the fixture to the shaft of the endoscope (an add-on secondary imagine endoscopic device may comprise a releasable endoscope attachment member such as a clip, band, or strap configured to attach the secondary imaging endoscopic device to the distal portion of the endoscope; Figs. 15A-E, paragraph 0036). Hameed teaches the use of a band as an endoscope attachment member helps to couple the fixture to endoscopes of various sizes, shapes, and materials (paragraph 0036).
Hameed is considered to be analogous to the claimed invention because it is in the same field of endoscopes with a secondary elongated device attached to the outer surface of the endoscope. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of O’Dea to incorporate the teachings of Hameed by adding a band around the endoscope shaft. Doing so helps to couple the fixture to endoscopes of various sizes, shapes, and materials, as recognized by Hameed.
Regarding claim 8, O’Dea, as previously modified by Hameed, discloses the device according to claims 1 and 6. Hameed further discloses wherein the band has a first end secured to the fixture and a second end secured to the fixture (a strap 1501 may have protrusions 15-2 or beads (e.g., a string of beads) that are configured to interfit with a receptacle 1503 (e.g., one or more notches, groves, ridges, recesses, etc.) located on the module 1500; Figs. 15A-E, paragraph 0036).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. Patent Appl. Publ. No. 2006/0069304 A1 to Takemoto et al. teaches an adapter with a band for attaching the adapter to an outer surface of an endoscope as described in Fig. 14-15 and following descriptive text.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLIVIA G STARKEY whose telephone number is (571)272-3375. The examiner can normally be reached Monday-Friday 8:00-5:00 ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Carey can be reached at 5712707235. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/OLIVIA GRACE STARKEY/ Examiner, Art Unit 3795
/MICHAEL J CAREY/ Supervisory Patent Examiner, Art Unit 3795
Prosecution Insights